AFNIC, the French domain name registry, will accept soon domain names with one and two characters, following its German and English counterpart’s footsteps. The idea was refused for a long time because of possible confusions with country extensions published by the International Organization for Standardization (ISO). However, there are few reasons to stop such registrations.
We can find indeed some restrictions leading to confusions, such as existing extensions in the AFNIC registry (<fr.fr>) and country or second level extensions (<uk.fr>, <co.fr>). Nevertheless, there isn’t any problem registering domain names like <a.fr> or <2ü.fr>.
Moreover, short domain names are popular. They are in limited number and easy to remember. Hence, their acquisition is not easy and the competition is tough.
Contrary to the German registry which offered in 2009 a procedure to best and quicker bidders, the English system processed by stages, a fairer method.
AFNIC plans to offer a procedure available by the majority of internet users and may propose different ways of release, such as « first come, first served » or an auction system.
Product placement is defined as all forms of commercial, audiovisual communication that include a product, a service or brand, or make reference to it by inserting it into a program, in exchange for payment or other benefit in kind (1). This communication method is termed hybrid whenever it integrates a brand into a non-commercial context in order to influence the spectator. The greater the program’s popularity, the greater the brand exposure, and sales of branded products will increase correspondingly.
Nevertheless, as regards product placement, there is a significant gap between France and the United States. In France, product placement does not account for more than 5% of total film budgets, against 30% in the United States. As an example, the Apple brand alone financed 16% of the total budget of the film “Mission Impossible: Phantom Protocol” in 2011, representing an investment of $23.5 million.
The success of product placement in the US is essentially due to the absence of regulations or legislative structures in this domain.
In France, product placement has been prohibited for a long time (2). The French Higher Audiovisual Council (CSA) allowed a certain tolerance for the cinema without specific guidelines. Then a 2007 European directive (3) reaffirmed the principle of the prohibition of product placement across all audiovisual media, but left to the discretion of Member States, however, the possibility of allowing it within a given framework. France transposed the directive in 2009 (4) and granted the CSA the authority to determine the conditions under which audiovisual communication programs can feature product placement (5). The CSA defined the conditions as follows:
Product placement is only authorized in films, audiovisual fictions and music videos unless the production is for children. It is banned in all other programs.
Product placement must exclude alcoholic drinks, tobacco and related products, medicines (with or without prescription), fire-arms and baby-foods.
The spectator must be informed of the existence of product placement notably by the use of a pictogram appearing as follows on the screen.
As well as being lucrative and providing an increasing number of product sales, product placement in films also has an impact on the brand’s reputation itself. Placement can be extremely beneficial in cases where the trademark holder is responsible for the placement, but equally it can harm the brand’s reputation where this is not the case. It may be that the holder is not satisfied by a placement, either because it hadn’t been requested or his opinion had not been sought, or because the placement did not respect the terms of the contract. In certain cases, unsolicited placements can devalue the brand or product. In this type of case, lawsuits could be filed for abusive, unauthorized use of a trademark or for tarnishing the image or reputation of the brand.
Product placements must therefore be chosen with care. Need advice? Dreyfus, specialists in trademark protection, are here to assist you.
(1) Article 1(m) in directive 2007/65/CE.
(2) 1989 Directive n°89/552/CEE and 1992 transposition law prohibiting product placement with the exception of cinematographic productions.
(3) Directive 2007/65/CE of the European Parliament and the Council of December 11 2007 modifying Council directive 89/552/CEE.
(4) Law n° 2009-258 of March 5 2009.
(5) Deliberation n° 2010-4 of February 16 2010 concerning product placement in television programs, published in the Official Journal on March 5 2010, modified by deliberation on July 24 2012, published in the Official Journal on August 7 2012.
Customs officers play an important role in identifying, at border-crossings, goods suspected of counterfeiting trademarks, models or patents.
What means do Customs officers have at their disposal to prove that articles are counterfeit?
Two types of seizures are permissible by law, one being preventative, the other prohibitive.
As a preventative measure, Customs authorities protect firms that have filed an interception request. This allows Customs officers to hold any suspicious goods for a period of ten days, limited to three days in the case of perishable goods.
As a prohibitive measure, Customs authorities implement a process of seizure where counterfeit is proven and thereby ensure the immediate withdrawal of counterfeit goods from sales channels, whilst at the same time taking the offenders to court.
PREVENTION: Customs retention
Intellectual property rights holders must file an interception request in order to activate a Customs watch which keeps them informed about the importation into France of allegedly counterfeit products.
When?
The request is made by simply providing the certificate of registration for a trademark, model or patent delivered by the National Institute for Intellectual Property (INPI) or other registration office. This measure is preventative and can be done before any cases of counterfeit are confirmed.
How?
The request form asks for certain information that ensures that Customs controls are effective:
The intellectual property title deed
Whom to contact (technical and administrative staff)
A technical description of the genuine goods, production lines and transport itineraries
A description of the illegal copy if the counterfeit goods are already in circulation
Duration?
The interception request is valid for one year from the date the dossier is approved by the administration. The cover can be renewed by written request. All information provided is confidential and may not be disclosed by Customs!
The advantages of the Customs retention process:
The information gathered enables Customs checks to be better targeted and therefore more effective.
The interception request is a prerequisite before any suspicious goods can be held for 10 days.
This procedure is carried out in close collaboration with rights holders
In order to file an interception request, the rights holder (or their representative) must comply with the following two conditions:
The holder must provide a very detailed description of the goods in order to help Customs officers spot possible counterfeit items.
This must be accompanied by relevant proof confirming that the request comes from appropriate rights holder.
In order to facilitate Customs checks and make them more effective, specific Customs training may be necessary. The rights holder has the possibility of training Customs officers in order to help authenticate goods examined by interception request.
PROHIBITION: Customs seizure
The intellectual property rights holder or their exclusive licensee must make a formal request to the president of the ‘Tribunal de Grande Instance’ (TGI or High Court) since seizure of counterfeit items comes under their jurisdiction. This seizure can be real or descriptive. In order to validate the seizure, the applicant must assign either as a civil entity before the TGI or directly before the Criminal Court within 15 days.
Civil responsibility
The lawsuit for counterfeit brought before the competent TGI authorities follows the rules laid down by common law and the case is to be heard within 3 years of the date of infringement. The case is usually brought by the rights holder, but their exclusive licensee can act in place of the holder if the latter, having been invited to proceed, declines to do so, unless the licensing agreement specifies otherwise.
When filing a lawsuit for counterfeit, the IP rights holder must prove that the act or acts of counterfeiting have occurred in accordance with the general principle of article 9 of the Civil Code according to which “it is the responsibility of each party to prove, in accordance with Law, the necessary facts in support of their claim.” Counterfeiting may be proven by all lawful means, but infringement seizure is the method most frequently used by rights holders.
In its final decision, the Court can ban the production of all counterfeit items, order the confiscation of goods bearing the counterfeit brand and award damages to the trademark holder in order to compensate all losses due to counterfeit.
Penal responsibility
This type of case is to be filed under the same conditions as with a civil case, in other words either by the trademark holder, or by his exclusive licensee. The public lawsuit is to be filed either by The Crown or by the victim via a civil case. Since counterfeiting is a crime, the case is to be heard within 3 years. This offence is punishable by four years imprisonment and a fine of 400,000€ (if the offence is carried out by organized crime the sentence can be extended to five years imprisonment and a 500,000€ fine). Judges have the right to pass additional sentences at their discretion: they can publish both the verdict and the sentence, as well as confiscating items and objects used to commit the crime.
Customs interceptions at French borders provide IP title holders with effective protection of their rights. Community Law established by two regulations(1) also ensures that Customs checks regarding IP rights are very effective.
On June 11 2013 the European Parliament adopted new regulations relating to Customs operations in order to ensure a greater respect for IP rights. This will be applicable from January 1st 2014 onwards and will replace European Community regulation 1383/2003 by introducing certain improvements:
The simplified procedure will lead to the destruction of counterfeit goods, without a Court Order, providing that the rights holder gives their agreement as must the importer.
Those who are surprised to receive small quantities (under 2 kilos) of counterfeit goods in the post, will have 10 days in which to consent to their destruction without having to pay for their storage or removal.
The list of protected IP rights has been extended to provide even greater protection (protection of commercial names, topographies of semi-conductors…).
The existing process for the rapid destruction of counterfeit goods is now compulsory in all member States.
Exercising the right to be heard has been harmonized concerning those for whom the seizure may be detrimental.
We cooperate regularly with Customs authorities in the fight against counterfeit and piracy in every area of intellectual property. We are available to advise you on the best strategy to adopt in order to establish an effective Customs watch.
(1)Regulation no 1383/2003 of July 27 2003, supplemented by regulation no 1891/2004 of October 21 2004
The Trademark Claims Service is a service offered by the Trademark Clearinghouse (TMCH). During the first 90 days of the general opening, alerts are sent to applicants wanting to register a name identical to the trademark registered with the TMCH including to the holders of the said trademark if the name could be registered.
The novelty lies in the service of sending notifications for post-registration to trademark holders, which will be expanded indefinitely whereas the pre-registration alerts directed to the applicant will only be active during the initial 90 day period.
This expansion of the service is an advantage for trademark holders as they will remain informed of the registration of names and may act accordingly even after the initial 90 day period. However the pre-registration alerts will be stopped, but this situation may be amended if the registrars are willing to cooperate in this matter.
This service is of particular interest to the extent that it enables monitoring – albeit limited- of trademarks registered with the TMCH. It is therefore perfectly suited to the defense of secondary trademarks which are not subject to extensive monitoring.
On 6 November 2013, The Paris International Chamber of Commerce published an important decision in the development process of new strings: the designated experts rejected the Limited Public Interest objection filed by the Independent Objector against the application made by the Afilias ltd Company for the delegation of the string .HEALTH (for more details on this decision go to: http://newgtlds.icann.org/sites/default/files/drsp/15nov13/determination-1-1-868-3442-en.pdf).
This decision sets a precedent: it is the first decision to be made following a Limited Public Interest objection.
As a reminder, 4 types of objections were available to oppose an application for one of the new strings: the String Confusion Objections, Legal Rights Objections, Community Objections and finally the Limited Public Interest Objection (http://newgtlds.icann.org/en/program-status/odr).
Limited Public Interest objections can only be filed by the Independent Objector when he considers that the tld was “in breach of morality and public order as defined in the general principles of international law” (Applicant’s Guide, art 3.5.3). This clause covers unjustified violent actions, racism, child pornography and anything that would be contrary to the principles of international law in accordance with international conventions (specified in the Applicant’s Guide, 11 in total, from the Universal Declaration of Human Rights to the Convention on the Rights of the Child).
The Independent Objector has the task of defending the interests of Internet users and must be represented in the International Chamber of Commerce in Paris (CCIP). Nominated by ICANN in May 2012, the Independent Objector is currently Professor Alain Pellet (official website http://www.independent-objector-newgtlds.org).
Accordingly, the Independent Objector, considering that the granting of .HEALTH to the Afilias ltd Company would be against the interests of Internet users, filed an objection against their application. For the Independent Objector, the term “health” does not designate something anodyne but rather “a crucial, existential need for every human being” recognized as a fundamental right in several International Conventions such as the Universal Declaration of Human Rights in 1948.
Based on this observation, the Independent Objector stated that the way that Afilias ltd intended to use the word “health” would not respect the fundamental right of access to healthcare, would not ensure the promotion of this right in the public interest and would be used in the same way as the other strings for which the Afilias ltd Company had applied, such as “.wine” or “.casino”. Moreover, he stated that several NGOs as well as the French and Malian governments had expressed their concern as to the reliability and loyalty of the .HEALTH string in the event of it being granted to a private Company.
In its defense, Afilias ltd pointed out that the tld .HEALTH could in no way be considered to be “in breach of morality and public order as defined in the general principles of international law” and that an evaluation of this nature concerning the potential future use of the string, and not the string itself, went beyond the mandate of the Objector.
In addition, Afilias ltd highlighted the different rights protection mechanisms that it has voluntarily set up, in particular a hotline for non-conformity breaches of <.HEALTH> and specific communication channels with national authorities and international organizations in order to ensure that .HEALTH functions in accordance with current legislation.
The CCIP experts rejected this interpretation by Afilias ltd. They confirmed that it was not possible to evaluate the compatibility of a string with public order and morality without taking into account the context of the application, including the probable effects on Internet users once the string was functioning. They also recognized that the .HEALTH string would operate in a sensitive domain in which the risks of negligence or abuse, as with fraud, are particularly high. All sides agree on this point, considering that the word « health », linked to the health sector, inspires a high degree of consumer confidence by persuading them that information available under a certain domain name has been scientifically proved.
Nevertheless, the experts do not share the suspicions of the Independent Objector concerning the management of the .HEALTH tld by a private Company. The experts stated that without proof to the contrary, they could not support the assertion made by the Objector that a private Company cannot, in a serious and responsible way, manage this string. Furthermore, the experts reminded the Objector that even if several NGOs and two countries (France and Mali) support this view, the World Health Organization, holding a unique position in the context of public health at international level, has implicitly rejected this position.
Based on these factors, the CCIP experts rejected the objection.
The importance of this decision is not limited to its novelty: it provides vital keys to the evaluation of Limited Public Interest objections. Accordingly, it is now recognized that Limited Public Interest objections will not only be assessed on how they are formulated but also on their potential use.
On November 28, 2013, the Court of First Instance of Paris has declared null and void the trademark Vente-privée.com on the ground that it was a common noun.
L’Express interviewed Nathalie who commented on the decision.
More information on the subject here (French article): link
The program continues and after the launch of 7 new gTLDs this week, Donuts Inc announced 7 new strings for December, 10. As a reminder, the different phases of the program are as follows:
Sunrises :
– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered are .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES;
– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available are: .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY;
– Sunrise from 10 December 2013 to 7 February 2014: the 7 new gTLDs will be .CONTRACTORS, .CONSTRUCTION, .DIRECTORY, .KITCHEN, .LAND, .TODAY and .TECHNOLOGY.
To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.
Donuts will accept registrations of domain names blocked by ICANN due to domain name collisions. These domain names will only be activated and used once the technical tests are finalised by ICANN.
Please find the complete list of the second-level domains blocked by ICANN on the following link:
http://newgtlds.icann.org/en/announcements-and-media/announcement-2-17nov13-en
Early Access Program :
During one week after each Sunrise, new gTLDs will be available on a “First-Come, First-Served” basis. The application fee for this period will be declining as per weekdays. Some of the Premium names cannot be registered.
General Availability :
As from the 5th, 12th or 19th February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Served” basis.
New gTLDs: . みんな, the first and only Japanese new gTLD
Google schedules to launch shortly a Sunrise for its first new gTLD, the Japanese IDN みんな(mee-nuh) which means “everybody”.
New gTLDs: Uniregistry will launch .SEXY and .TATOO gTLDs
Uniregistry, which applied for the gTLDs .GUITARS, .CHRISTMAS and .BLACKFRIDAY, will soon announce a first Sunrise of 60 days for its .SEXY and .TATOO gTLDs.
The registry will propose a mechanism for the protection of rights by blocking TMCH registered trademark.
New gTLDs: imminent launch of .MENU
ARI registry will intend to launch its new gTLD .MENU very soon.
The targets of this new gTLD are restaurants, chefs and every person interested in cookery. As the term “menu” is used in 33 different languages, the gTLD .MENU will gather a large online community throughout the world.
New gTLDs and TMCH : the Trademark Claims Service is updated
The trademark Clearing house is to give an indefinite extension of part of the Trademark Claims Service.
The post-registration alerts to trademark holders will be extended indefinitely whereas the pre-registration warning for the registrant will be sent during the original 90-days period.
Possible registration of .UK for summer 2014
Nominet will soon accept .UK registrations provided that these domain names do not already exist under .CO.UK and .ORG.UK gTLDs.
.CO.UK and .ORG.UK customers will have 5 years to decide whether they want to register their existing domain names in .UK or to keep only the .UK address. In the case where a person holds a .CO.UK and another one an .ORG.UK, the UK name will be offered in priority to the .CO.UK owner.
.DE registry adds a domain name restoration service
Since December 3, 2013, DENIC introduced its domain name restoration service, the RGP or Redemption Grace Period, which will allow domain name owners to recover their expired domain for up to 30 days after its expiry.
This service is available for all second-level domain names in case of their accidental deletion. If no redemption is requested during these 30 days, the domain name will be again available for registration.
On September 30, 2013, a judge awarded Pinterest 7.2 million dollars in damages and legal fees against a Chinese cybersquatter.
Qian Jin had bought more than 100 domain names including pinterests.com, pimterest.com and pinterost.com and was using them as domain parking.
The judge proclaimed that the infringement was “willful and serial” and stated that “there is no indication of good faith mistake or excusable neglect justifying defendant’s failure to respond or otherwise defend against plaintiff’s allegations”.
Pinterest also took possession of the domain names.
On May 17, 2013, the Rwandan Government submitted its request to join the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (known as the “Madrid Protocol”).
The Madrid Protocol became effective with respect to Rwanda on August 17, 2013.
Article 290 of Law n° 31/2009 of 26/10/2009 on the Protection of Intellectual Property in Rwanda states that:
The provisions of any international intellectual property treaty to which the Republic of Rwanda is party shall apply. In case of conflict with the provisions of this Law, the provisions of the international treaty shall prevail over the latter.
This accession favors trademarks holders who might include Republic of Rwanda when depositing an international mark or extending existing international registrations to Rwanda.
The program of new generic strings known as New gTLDs (New Generic Top Level Domain Names), such as <.PARIS>, <.BOOKS>, <.SHOP>, <.LOVE> and several hundred others, has entered its final phase. However, the risk of domain name collisions, taken very seriously by ICANN, is delaying the activation of these new strings awaited with such anticipation by Internet users and rights holders alike. The management of these risks is imposing new constraints on the reservation of second level domains and de facto forcing changes to the reservation of domain names in the new strings.
Reminder
A domain name comprises a radical and a suffix, which is also known as a string. The suffix is the top level domain name (TLD) and the radical is the second level domain name (SLD).
Name Collision is a problem of nomenclature that could occur in the domain name system (DNS), between the new strings and those used in a private domain name system. In reality, these names are used in different protocols on the Internet and may give rise to confusion. An Internet enquiry could thereby be directed to a non-designated site.
The risks
Enquiries aimed at resources in private networks end up searching the public DNS and thereby “collide” with the newly delegated gTLDs, and vice versa.
A firm’s e-mail system could transfer mails to the wrong server.
Internet users could be directed to the wrong Internet site.
Internet users could conclude that the requested website does not exist.
The challenge
What is at stake regarding Name Collision is nothing less than public confidence in the DNS system and the Internet itself.
ICANN’s position
Taking very seriously the risks that could be caused by name collisions, ICANN asked IAS Global Advisors LLC to carry out a study to analyze the risks relating to each future domain name, both at top level (gTLD) and also second level (SLD)..
It is worth remembering that the DNS root servers are the thirteen root servers of the Internet’s Domain Name System that come under the authority of ICANN. They respond to requests concerning top level domain names (TLDs) and redirect them towards the DNS server of the relevant top level. The root server data were collected on the “Day in the life of the internet” (DITL), an initiative run by the Domain Name System Operations Analysis and Research Center alias DNS-OARC).
The study analyzed two types of data:
Samples of DNS requests transferred to root servers
Information coming from certification authorities concerning the delivery of certificates for internal names (for example: TLS/SSL certificates for non-delegated names).
Based on this study ICANN was able to take measures that aimed to reduce the risk of name collision. These measures affect both first level and second level domains.
Name Collision & generic top level domains (gTLDs)
Risk classification : L’étude sur la collision des noms identifie trois catégories d’extension en fonction de leurs risques potentiels de collision dans l’espace de noms.
High Risk: only 2 strings (<.home> and <.corp>), the most widely used in Company networks, were classed as “High” risk.
Indeterminate Risk: in 20% of applied-for strings (ex: <.cba>), the risk of name collision is undefined.
Low risk: 80% of applied-for strings represent a low risk of name collision. In general, the longer and more descriptive the gTLD, the lower the risk. A minimum of 4 letters represents adequate security in the majority of cases.
Measures taken to reduce risks:
High Risk: No delegation of <.corp> and <.home>.
Indeterminate Risk: Carry out more detailed studies knowing that they could take from 3 to 6 months (ex: <.cba>)
Low risk: It is possible to delegate strings belonging to this category. However, a waiting period of at least 120 days from signing the delegation contract must be respected before being able to activate the first domain names at the second level (SLD) in the DNS.
Name Collision & second level domains (SLDs)
In order to activate second level domain names (SLDs), the registry operators of new strings must first receive their Collision Occurrence Assessment. According to the results of this evaluation, personalized risk-reduction measures to avoid collision will be required of registry operators for each new gTLD. These measures can include:
The indefinite block of second level domain names (SLDs)
The temporary block of second level domain names (SLDs)
The creation of a delegation trial using any format
Making the SLD valid for the single entity causing the name collision
Any other risk-reducing measures that may be identified during the evaluation or by any further studies
The specific context for the management of the consequences of the collision-risk evaluation has not yet been defined. ICANN hopes to finalize this before the end of March 2014. As a result, the activation of SLDs has yet to be tabled.
If the New gTLDs are eligible, the operators of these registers will be able to delegate the SLDs before the name collision risk is evaluated. However, they must block all the domain names designated by ICANN (for example: <.PARIS> a list of approximately 18,000 SLDs including <disneyland>, <hermes>, <diesel>, <louisvuitton>, etc…).
If they are not eligible, the operators of these new registers will not be able to delegate the SLDs before doing an in-depth evaluation. Since the final framework for this evaluation has not yet been determined, the 25 ineligible new gTLDs will have longer to wait. The TLDs involved are the following: .blog, .box, .business, .casa, .cisco, .comcast, .dev, .family, .free, .google, .iinet, .mail, .network, .office, .orange, .philips, .prod, .sfr, .site, .taobao, .taxi, .web, .work, .world, .zip .
As a result, it is now vital for rights holders to check the reservation possibilities for their second level domain names in relation to each new string.
We can offer you a personalized study according to the strategy defined for the reservation of domain names in the new strings.
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AFNIC, the French domain name registry, will accept soon domain names with one and two characters, following its German and English counterpart’s footsteps. The idea was refused for a long time because of possible confusions with country extensions published by the International Organization for Standardization (ISO). However, there are few reasons to stop such registrations.
